Prof Dreyfuss
IP Outline
Fall 2005
PART A: TRADEMARK LAW
I.
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CATEGORIES OF MARKS
a. §1127: Construction and Definitions: this part of the code defines four
different types of marks
i. Trademark: includes any word, name, symbol or device or any
combination thereof
1. Used by a person, or
2. Which a person has a bona fide intention to use in
commerce and applies to register on the principal register
established by this chapter, to identify and distinguish his
or her goods, including a unique product, from those
manufactured or sold by others and to indicate the
source of the goods, even if that source is unknown.
i. Service Mark: identifies a source of services. To qualify as a
Service Mark, the symbol must be used to identify specific
services. At a minimum, a service is a distinct activity, not merely
ancillary to a larger business, that the mark owner does for the
benefit of others. While the services need not be the principal
business of the mark owner, services which are expected or routine
in connection with the sale of goods are not “services” within the
meaning of service mark.
a. NOTE – §1053 provides that service marks are
registrable in the same way that trademarks are and
subject to the same provisions
ii. Collective Marks: Collective Marks are defined under the Lanham
Act as “a trademark or service mark used by the members of a
group or organization.” This is something where everyone in a
particular organization would put the mark on something.
iii. Certification Marks: A Certification Mark is a symbol used by a
person other than its owner to certify regional or other origin,
material, mode of manufacture, quality, accuracy, or other
characteristics of such person’s goods or services or that the work
or labor of the goods or services was performed by members of a
union or other organization.” (15 USC §1127). This mark conveys
not just the source of the goods, but that the goods are of a
particular quality.
1. Requirements: Because consumers rely on the owner’s
approval of the mark’s use, the Lanham Act imposes
certain requirements on the owner for the mark to remain
valid.
a. The owner of the certification mark may not use the
mark herself in marketing or producing the relevant
goods or services, although she may engage in
activities to promote use of the mark. 15 USC
§1064
Prof Dreyfuss
IP Outline
Fall 2005
II.
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b. The owner must be able to control the mark, must
not allow the use of the mark for purposes other
than to certify, and may not refuse certification to
those that meet the relevant criteria set by the mark
holder.
ELIGIBILITY FOR TRADEMARK REGISTRATION
a. Forms of Registration
i. Primary Register
ii. Secondary Register
b. Requirements
i. Basic Physical Requirements
1. Source Identifying Function: the mark must identify the
source of the goods, not just the goods themselves.
2. Affixation
3. Bona fide intent to Use
4. Use in interstate commerce
ii. Cognitive Requirements [ARE THERE OTHER COGNITIVE
REQUIREMENTS???]
1. §1052: The Mark must be distinctive. This means that the
mark must be something “by which the goods of the
applicant may be distinguished from the goods of others.”
a. Cases:
i. Annheiser Bush Case
ii. Dial-a-Mattress
c. Categories of Marks
i. Inherently Distinctive → may be automatically registered
ii. Suggestive → may be automatically registered
iii. Descriptive → may only be registered if acquire secondary
meaning
iv. Generic Terms → may NOT be registered
d. Levels of meaning [NEED TO GO BACK AND ADD IN HERE]
i. Primary
ii. Secondary
e. Design Issues/Trade Dress
i. Functional things not protectible
1. Test for Functionality as related to Trade Dress:
a. Whether it puts a competitor at a distinct
disadvantage because the feature is essential?
b. Whether it affects the cost or the quality?
c. NOTE: some courts say that you do not need to
look too hard into the issue of functionality,
whereas others say that it is necessary to make more
of an inquiry.
2. Cases:
a. Tornado fan case
b. Shredded Wheat case
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IP Outline
Fall 2005
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c. Road Work Sign Case
ii. Aesthetic Functionality
iii. Packaging v. Product Configuration
1. Cases:
a. Crescent Wrench Case
b. Rock and Roll Hall of Fame
iv. Treatment of Color under Trade Dress
1. Two Pesos v. Taco Cabana: the question was whether these
colors were functional for a Mexican restaurant i.e. would
it be a real injury if one restaurant gets to take the colors
and does not let other Mexican restaurants use them?
2. Qualitex: this was a single color case. Color can be
protected as a trademark as long as it is not functional.
a. NOTE: it is clear from this case that it is possible to
get trademark protection for single color. What is
not clear is if it is necessary for secondary meaning
to have developed before can get the protection.
b. Other related cases
i. Ice pack case – court said blue could not be
protected as a trademark for ice because
there are not that many colors which
symbolize cold.
f. Types of marks which are not inherently distinctive and thus may only be
trademarked after acquiring secondary meaning
i. Merely descriptive marks
ii. Misdescriptive Marks
iii. Deceptively Misdescriptive Marks
iv. Colors used as marks – need to look into this, because according to
prof not clear if need to have secondary meaning or not
v. Product design trade dress
vi. Primarily a Surname
vii. Primarily geographically descriptive terms
g. Unprotectable: Marks in the following categories cannot be protected
i. §1052(d): Likely to cause confusion with existing marks
1. Several factors involved in determining likelihood of
confusion w/existing mark
a. Strength of P’s mark
b. Degree of similarity between the marks
c. Proximity of the products in the marketplace
d. Actual confusion
e. Defendant’s good faith in developing the mark
f. Quality of defendant’s product
g. Care/sophistication of the relevant consumers
2. NOTE: the analysis here involves prospective rather than
actual uses
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IP Outline
Fall 2005
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ii. §1052(a): Deceptive. Something is deceptive if the matter is
material to a potential buyer’s decision.
1. Analysis to determine if something is deceptive:
a. Does the matter for which registration is desired
misdescribe the goods?
b. Are consumers likely to believe the
misrepresentation?
i. IF YES → the mark is deceptively
misdescriptive.
c. If deceptively misdescriptive, need to do further
analysis to see if the material is deceptive. Need to
ask: would the misrepresentation materially
influence the purchasing decision of consumers?
i. If YES → the mark is DECEPTIVE
2. Cases:
a. Turtle Wax/Glass Wax case
iii. Functional: trademark does not protect functional matter.
1. Three ways in which material can be deemed functional
a. The material is essential to the use/purpose of the
device
b. The material affects the cost/quality of the device
c. Permitting one seller to have exclusive use of the
material would put competitors at a significant
nonreputation-related disadvantage.
d. NOTE – while color is something which is allowed
to be trademarked, in some cases color can also be
considered functional.
iv. §1052(a): Marks Suggesting a False Connection. For this section to
apply, it is not necessary to show that the misrepresentation would
be material to consumers.
v. §1052(a): Scandalous. There is little case law as to what
constitutes scandalous, but these matters have been considered
scandalous if “it is shocking to the sense of decency and offensive
to moral feelings.” Whether something is considered scandalous is
determined with respect to the opinion of society at large, but this
is a fairly subjective determination.
1. Examples of marks which have been considered scandalous
a. “Old Glory” condoms
b. Cleveland Indians Mark
2. Issues which arise with Scandalous Marks
a. In some cases a mark is ok in one country/context
but does not translate well into another EX: Chevy
“No Va” example
b. Standing issues
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IP Outline
Fall 2005
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vi. §1052(a): Disparaging of a Group. Whether something is
disparaging is determined with respect to the opinion of the group
referenced.
vii. §1052(e)(2): Primarily Geographically Deceptively Misdescriptive
Marks. A geographically misdescriptive mark is not protected even
if it is not deceptive (meaning that consumers would not consider
the geographic term to be material).
1. Examples of Primarily Geographically Deceptively
Misdescriptive Marks
a. Swiss Army Knife
2. Issues to consider with Primarily Geographically
Deceptively Misdescriptive Marks
a. Issue of our membership in TRIPS – some of our
trading partners take this issue more seriously than
we do.
viii. §1052(b): Government Symbols. the Lanham Act denies TM status
to matter that “consists of or comprises the flag or coat of arms or
other insignia of the US, or of any State or municipality, or of any
foreign nation, or any simulation thereof.”
ix. §1052(c): Name of Likenesses of Individuals. This rule only
applies to uses that potential buyers would link to specific people
because the name is so well known or the person is so closely
associated with the relevant type of goods or services.
THE TRADEMARK REGISTRATION PROCESS
a. Steps in the Trademark Registration Process
i. Trademark Searching [IS THERE A PARTICULAR SECTION
FOR THIS???] – need to make sure that the mark is not generic,
functional, scandalous or otherwise nonprotectible, and that it is
not already in use by some other party.
ii. §1127: Specific categories of use required to support registration
1. Trademark → the trademark must be affixed to the good
itself or to the packaging
2. Service Mark → must be used in displays or advertising,
and the services covered must be rendered in interstate
commerce.
3. Bona fide use → use must be a “bona fide use of a mark in
the ordinary course of trade” and not made merely to
reserve a mark.
4. Interstate commerce → the use must be in interstate
commerce
iii. §1051: Submission of application, fee etc…Registration typically
involves submitting a fee, an application, and a verified statement,
and requisite specimens or facsimiles of the mark.
iv. §1062: Examination by Attorney. Once the USPTO [WHAT
DOES THIS ABBREVIATION STAND FOR???] receives the
application and fee, the application is referred to an examining
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IP Outline
Fall 2005
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attorney. the examining attorney then determines whether the mark
is registrable (or for intent to use applications, whether it would be
registrable).
1. Grounds for Refusal to award registration:
a. The most common reasons for refusal to award
registration are because the mark is likely to cause
confusion or the mark is merely descriptive.
However, refusals may also be made on other
grounds, such as the mark is generic, functional,
immoral, deceptive etc….
2. Standing to oppose registration:
a. The opposer need not be a competitor or the owner
of a similar mark, but rather it must be someone
who has a “real interest” in the outcome.
v. §1058: Effectiveness of Mark. Once registered, a mark remains
effective for ten years providing that affidavits showing current use
are filed after six years. The registration may be renewed every ten
years without a time limit.
b. Benefits of the Registration Process
i. §1072: Constructive notice and priority with respect to later
adopters.
ii. §1115(a): Prima face evidence of validity.
iii. §1065: Incontestability. The validity of registered marks can
become incontestable after five years of continuous use.
1. See p. 22 of Big Outline
2. The most common advantage of incontestability is that the
mark holder no longer needs to be able to defend the mark
with regards to secondary meaning, as this is now
presumed.
iv. §1057(c): Filing of the application, providing the mark is
subsequently registered, is constructive use, nationwide in effect,
for purposes of priority against similar marks.
v. § 1057(b): The certificate of registration is “prima facie evidence
of the validity of the registered mark and of registration of the
mark.”
vi. §1111: The potential for infringement remedies are greater.
vii. §1111: The mark owner may use a TM notice, such as the r
symbol, with the mark, which like a copyright notice or patent
marking, serves as a warning to others.
viii. The mark will show up in trademark searches by others, and thus
serve as notice.
c. Types of Trademark Applications
i. Use Applications → seeks to register a mark already in use
ii. Intent to Use Applications → seeks to register a mark for which
the party has a bona fide intent to use the mark in interstate
commerce. §1051(b)
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IP Outline
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d. The Registers
i. Principal Register → used for marks which meet the requirements
described above for trademark protection
ii. Supplemental Register → for marks capable of identifying the
source of goods/services, but do not meet the requirements for
registration on the principal register.
1. Effect of Registration on Supplemental Register
a. Not all of the advantages of Primary Registration
apply to those marks registered on the Secondary
Register
b. Supplemental registration does gives constructive
notice, allows the use of the ®, and provides federal
jurisdiction for infringement lawsuits.
c. Primary purpose of supplemental registration is for
international trademark practice
e. Determining the Owner of a Mark
i. §1055: The owner of the mark is the person who controls the first
use of the mark for the relevant goods/services.
ii. Priority between confusingly similar marks based on use – may be
actual use, constructive use, or analogous use
1. Actual Use
2. Constructive Use: this is established by the date of an intent
to use application provided that it results in the subsequent
registration or filing of a statement of actual use. Although
subsequent use is required before the mark is actually
registered, the date of the filing of the application serves as
the priority date.
3. Analogous Use: a judicial doctrine under which priority is
established by acts that, although not of the character
required to support registration based on use, are deemed
sufficient to establish the mark as an indicator of source to
the public.
iii. NOTE – in the case of descriptive marks, priority is established not
by use of the descriptive term but rather by use of the term as a
mark, which requires that it attain secondary meaning.
f. Geographic Limitations
i. Common law rule → the use of a mark establishes trademark
rights and gives priority to the mark owner, but only in the
geographical area in which the mark is actually used.
ii. The Lanham Act establishes nationwide priority for registered
marks, but also provides that unregistered marks retain priority in
their geographic area of use. The junior user must use her mark
without knowledge of prior use by the senior user. Courts have
interpreted this as meaning that the registered mark has priority
only where there is an actual conflict.
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IP Outline
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g. Assignment: if a trademark is sold, it must be sold with the associated
goodwill of the business. 15 USC §1060.
IV.
CAUSES OF ACTION FOR TRADEMARK INFRINGEMENT
a. §1114: Consumer Confusion. The basic standard is whether the mark
has been used in commerce in a way which is likely to cause
confusion. The structure is used to determine whether the mark is so
similar to another good as to create confusion.
i. Contexts in which Consumer Confusion arises
1. when the marks are very similar
2. when the marks are very different
ii. Required Elements for a cause of action of Consumer Confusion
1. P must own a valid registered mark
2. The alleged infringer used the mark in a manner indicating
source
3. The alleged infringer used the mark or a similar symbol in
commerce
4. The alleged infringer used the mark/similar symbol in
connection with the sale, offering for sale, distribution, or
advertising of goods or services;
5. The use caused likelihood of confusion, mistake or
deception
a. The use need not actually confuse others or cause
actually mistakes, just need to show a “likelihood of
confusion.” This has been construed to mean
probability of confusion, not a mere possibility.
This is judged from the perspective of the
reasonably prudent purchaser.
b. Types of Confusion
i. Initial interest confusion: liability when
defendant’s use of the mark may attract the
attention of potential customers looking for
the products associated with the mark, even
though the confusion is dispelled before the
sale is made.
ii. Post-sale confusion: the party confused is
not consumers, but others who see the
consumer using the product.
iii. Reverse confusion: here defendant’s use of
the mark does not make consumers think
that the defendant is selling plaintiff’s
goods, but rather, use of a well-known
junior mark confuses consumers into
thinking that the senior mark is actually the
infringer.
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iii. Factors for determining the likelihood of confusion (Polaroid
Test) [Note – this is a second circuit test, but every jurisdiction has
some sort of test like this] p. 89 of casebook
1. Strength of the Plaintiff’s mark – this refers to its level of
distinctiveness and commercial strength
2. How well the mark is actually known - the more secondary
meaning it has, the more likely it will be protected.
3. Degree of similarity between the marks – the greater the
similarity, the greater the likelihood that consumers will be
confused, and thus the greater likelihood that the court will
find confusion.
a. NOTE – the prominent use of the maker of the of
the product, or the use of a disclaimer, may dispel
any confusion as to source.
4. Proximity of the Products in the Marketplace
5. Likelihood that Prior Owner will Bridge the Gap
a. “Family of Marks” concept
i. is there a common feature to these different
items?
ii. Does this common feature relate to the
company?
6. Actual Confusion – note this is only relevant if taking the
right population into account i.e. the “relevant purchasing
public.”
7. Defendant’s Good Faith Effort in Adopting its Own Mark –
while good faith is not a defense, such factors are likely to
weigh against infringement.
8. Quality of the Respective Products
9. Care and Sophistication of Relevant Customers
iv. The following are NOT required to prove infringement based on
Consumer Confusion
1. Intent to confuse
2. Copying
3. Similarity of the goods/services – there may be
infringement even if the symbol used or the relevant
goods/services are different, as long as there is a likelihood
of confusion.
b. §1125(a)/43(a): False Designation of Origin. This section has been
interpreted as providing several different causes of action.
i. Consumer Confusion based on false designation of origin
1. Test: likelihood of consumer confusion
2. Cases:
a. L’Aiglon Apparel, Inc. v. Lana Lobell, Inc.: in this
case P and D were both selling dresses in catalogs.
D was missing a picture for a dress in its catalog, so
it took a picture from P’s catalog. This was the first
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IP Outline
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case in which a court allowed P to sue under “false
designation or origin” on the basis of consumer
confusion.
ii. False Endorsements: many countries recognize rights of integrity
and paternity which can be used to prevent the use of an
individual’s persona in a context that suggests endorsement,
approval or sponsorship. Several recent cases use §43(a) to achieve
similar protection.
iii. Reverse Passing Off: This occurs when D sells P goods,
representing that D is their source/origin.
1. Cases
a. Dastar Corp. v. Twentieth Century Fox Film Corp.:
The SC stressed that the “source” or “origin” of
goods for Lanham purposes is the manufacturer of
the goods. Accreditation for authorship is not
otherwise controlled by federal law for most works,
with the exception of certain types of visual art.
iv. False Advertising:
1. This is D representing that his goods/services have
characteristics which they do not have.
a. This includes things like trade disparagement, D’s
misrepresentation of the quality of P’s goods.
b. Liability under §43(a)(2) goes well beyond
trademark infringement liability.
c. Literal falsity is not required, explicit or implied
misrepresentation will suffice. BUT mere
statements of opinion do not suffice.
2. Factors which the court looks at to determine if there is a
valid claim:
a. Is the statement literally false?
b. Is it just a free floating claim? EX: “this product is
better than that one”? If so, P has burden of
showing that the statement is false.
c. Are consumers being mislead? If so, the ad may be
enjoined, even if literally true.
i. Tylenol v. Anacin
c. §43(c): Dilution. the lessening of the capacity of a famous mark to
identify/distinguish goods or services, regardless of the presence or
absence of competition between the owner of the famous mark and other
parties or likelihood of confusion, mistake or deception.
i. This is intended to be used in cases where the mark is impaired
outside the context of source/origin.
ii. Requirements for proving a Dilution Claim
1. Must Prove Actual Dilution NOT likelihood of dilution
(Mosley/Victoria’s Secret case)
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a. Blurring: this would be if the marks are identical, so
there is an incapacity to distinguish the marks.
Blurring involves destroying the impact of the mark
by using it on so many different goods.
i. An example of dilution would be if you see
the same mark in many different contexts,
then each time you see it, you have to stop
and think about what the mark means,
because you are no longer sure it represents
one specific thing. The question is the
amount of time it takes the consumer to
move from thinking about the trademark to
thinking about the trademark holder’s
product.
b. Tarnishment: this is considered to be relatively
easy, you know it when you see it.
i. NOTE: the Mosley case cast some doubt on
whether Tarnishment is even an element of
the federal cause of action.
2. Strength of the Mark: the stronger the mark, the more likely
the holder of the mark can bring a dilution claim. Thus it
would be less likely that the holder could bring a dilution
claim if he used a descriptive rather than a fanciful mark.
iii. Limits on the Dilution Claim
1. As discussed above, need to show actual dilution
2. Limited only to famous marks
3. The Dilutive use must happen after the trademark has
already become famous
4. Can only bring a claim based on uses by defendant which
are “commercial uses in interstate commerce.” This means
that P can only bring a claim if D is within the appropriate
market.
a. EX: Mattel, Inc. v. MCA Records, Inc. (the Barbie
Girl case): “the core notion of commercial speech is
that it does not more than propose a commercial
transaction… if speech is not ‘purely commercial,’
that is if it does more than propose a commercial
transaction, then it is entitled to full First
Amendment protection.
b. NOTE: in Mattel the court asked if the mark was
being used in commerce, but did not ask if the mark
was being used in commerce as a trademark.
5. Only injunctive relief allowed unless the dilution was
“willful.” (§43(c)(2)).
iv. Cases (See Big Outline p. 33 for more info)
1. Ferrari v. Roberts
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IP Outline
Fall 2005
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2. Victoria’s Secret v. Victor’s Little Secret
3. John Deere v. YardMan
4. Ringling Bros. Case
d. §43(d): Cyber-Piracy
i. When used: when §1114 can’t be because no consumer confusion,
such as if no product being sold.
ii. Requirements for a Cyber-Piracy Claim (§43(d)(1)(A) [NOTE –
this cause of action can produce civil liability]
1. Bad faith intent to profit from the use of a mark, including
a personal name which is protected as a mark under this
section and
a. Criteria to see if someone acted in bad faith
(§43(d)(1)(B))
i. Whether someone is buying lots of domain
names
ii. Whether the person knew the domain name
would be confused
iii. Whether they are trading off the original
trademark name
iv. Whether they are diverting customers for
financial gains
2. The person w/bad faith must have registered, trafficked in
or used a domain name which
a. For marks which are distinctive at registration →
the offending domain name is identical or
confusingly similar to that mark
b. For famous marks which are famous at registration
→ the offending domain name must be identical or
confusingly similar to the dilutive mark
c. Is a trademark, word or name protected by reason of
§706 of Title 18 §220506 of Title 36.
iii. Cases:
1. Wallmart v. Wallmartcanadasux.org
2. Playboy v. Welles
DEFENSES TO INFRINGEMENT
a. §1115 provides a list of defenses which are available even after the mark
becomes incontestable. These are the primary defenses, plus some others.
i. §1115(b)(1): Fraudulent registration
ii. §1115(b)(2): Abandonment
iii. §1115(b)(3): Use of the mark to misrepresent the source of the
goods or services on or in connection with which the mark is used
iv. §1115(b)(4): Descriptive Use. Fair use of the mark as an
individual’s name or as a descriptive term to describe the goods or
services of such party, or their geographic origin. This is
essentially an argument that the TM is being used otherwise than
as a mark.
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1. KP Permanent Make-Up v. Lasting Impressions: D needs
to prove that the mark is being used to describe its goods,
and is being used fairly and in good faith. This of course
leads to the question of what is “fairly” and what is “good
faith.” If the mark is being genuinely in a descriptive
manner, it is hard to know what kind of confusion would
matter.
v. §1115(b)(5): Lack of Knowledge: Supposed infringing user has
been using the mark without knowledge of the registrant’s prior
use.
vi. §1115(b)(6): Prior Registration: the use which is supposedly
infringing was registered and used prior to the registration under
this chapter or publication under subsection (c) of §1062 of this
title of the registered mark of the registrant and is not abandoned.
vii. §1115(b)(7): Use of the mark to violate the antitrust laws
viii. §1115(b)(8): That the mark is functional
1. NOTE: even if something was not functional at the time of
registration, it could be functional later on. Also, something
might not be functional in all circumstances, it is sufficient
if it is functional in the particular relevant circumstance.
ix. §1115(b)(9): Equitable principles, such as laches, estoppel, and
acquiescence
b. Nominative Use: the idea is that if certain uses of a TM not allowed by
others, there would be no way to refer to the trademark holders.
i. Requirements:
1. The product or service in question is not readily identifiable
without use of the trademark;
2. only so much of the mark or marks is used as is reasonably
necessary to identify the product or service and
3. the user does nothing that suggests, in conjunction with the
mark, sponsorship or endorsement by the trademark holder
ii. Cases:
1. Playboy Enterprises, Inc. v. Welles
2. New Kids on the Block v. New America Publishing, Inc
c. Comparative Advertisement:
i. We have a notion that people should get to tell consumers that their
products are better by comparing them to Ps’ products. In order to
give people who are considering buying options, need to be able to
give them information about comparable products.
1. Case:
a. Lever Bros. Co. v. United States
d. Lack of Genuinely Confused Consumers
i. EX: could say that when people buy a Coach bag it is from a
Coach store, and same with a Gateway bag, so no one is confused
about what they are getting.
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ii. BUT the argument on the other side is that once people are
walking around on the street with the bags, other people will see
them and get confused as to which type of bag they are, thinking
the Coach bags are Gateway and vise versa.
e. Parody/Criticism: the use of a mark that qualifies as a parody is not
infringement. The parody defense allows people to make fun of the
trademark holder on the internet (or other similar uses).
i. Requirements:
1. Need to show a lack of confusion
2. Need to convey two messages simultaneously
3. Need to use only as much of the underlying TM as
necessary to convey the message
4. Need to be clear that D’s use is not sponsored by P.
5. Need to comment on the underlying TM itself.
ii. NOTE: Neither a parody nor a nominative use create the requisite
likelihood of confusion for P to be able to bring a case of
trademark infringement.
iii. Cases:
1. Wallmart v. Wallmartcanadasux.org
2. Michelob Oily case: court said this was NOT a parody,
because it was not commenting on Michelob, but rather on
the environment.
3. Reddy Communications, Inc. v. Environmental Action
Foundation: this was the Reddy Killowat case. In order to
parody a mark by calling attention to it and making fun of
it, need to be able to make some use of the underlying
mark.
f. Fair Use (§1115(b)(4): The idea is that TM sometimes has expressive
uses. Need also to consider whether uses like these should even be
considered infringement at all, or whether they should be considered
infringement, but then there is a fair use defense?
i. EX: someone’s use of her own name for something might be
considered a fair use, because this could be seen as a way to
describe that the business belongs to her. However, this might not
be allowed as a fair use if instead she is using her name as a
trademark.
ii. Requirements:
1. the use of the name, term, or device charged to be an
infringement is a use, otherwise than as a mark, of the
party’s individual name in his own business OR
2. the use is the individual name of anyone in privity with the
party using the name OR
3. the use is of a term or device which is descriptive of and
used fairly and in good faith only to describe the goods or
services of such party, or their geographic origin
iii. Cases:
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1. Presttonettes, Inc. v. Coty: “when the mark is used in a way
that does not deceive the public we see no such sanctity in
the word as to prevent its being used to tell the truth.”
g. Prior user
h. Genericity: D can always make the claim that P’s TM is generic, and thus
cannot be protected. Marks can become so closely associated with a
category of goods that everyone who markets the goods in the category
needs to use the word to compete. At that point, the symbol, even if it was
once considered capable of distinguishing between goods, becomes
unprotectable.
i. EX: plastic laminate, everyone now knows it as formica, which
was formerly a TM. Aspirin, thermos, cellophane, shredded wheat,
and escalator are other examples of trademarks which were lost in
this way.
ii. Determining if a mark has become generic:
1. §1064(3): Genericity is determined by the primary
significance of the registered mark to the relevant public
and not by purchaser motivation to buy goods within the
niche. (Bayer v. United Drug Co.)
2. In some cases they use the “chutzpah test” – if the
competitor has the “chutzpah” to use their mark, then this is
a good indication that your mark has become generic.
i. Abandonment (§1127): The purpose of this defense is to make sure that
people do not get confused, and also to make sure that people are not
warehousing the marks. There are several ways in which a trademark
holder can lose his rights.
i. Discontinued use with intent not to resume
1. Intent not to resume may be inferred from circumstances.
Nonuse for three consecutive years shall be prima facie
evidence of abandonment. “Use” of a mark means the bona
fide use of such mark made in the ordinary course of trade,
and not made merely to reserve a right in the mark.
2. discontinued use alone is not sufficient, there also must be
no intent to resume use.
3. the statute provides that nonuse for three consecutive years
constitute prima facie evidence of abandonment. However,
this is still something which can be rebutted.
ii. When any course of conduct of the owner causes the mark to
become the generic name for the goods or services on or in
connection with which it is used or otherwise to lose its
significance as a mark.
iii. Loss of Distinctiveness:
1. This can happen when you don’t monitor what your
franchisees are doing.
2. Another way is to not go after third parties who are
reducing the distinctiveness of your mark..
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iv. Mark otherwise loses its significance as a mark
1. If the owner of a mark sells it to the owner of another
product who uses the mark on products of completely
different qualities. Does not per se mean abandonment, one
must also show that the failure in question has in fact led to
the mark losing its significance as an indicator or a source.
2. Through naked licensing i.e. if the trademark owner
licenses her mark to other sellers without controlling their
products. No strict contract to police the goods is absolutely
necessary, TM owner must just retain right to control
quality.
3. TM owner can lose rights by permitting widespread
infringement, failing to police activities of licensees etc…
v. Cases:
1. Amos and Andy case
j. No Commercial Use
i. Cannot have a claim of TM infringement w/o commercial use.
1. EX: Ted Kennedy’s wife saying she was treated like a
“Barbie” – no cause of action
k. Mark does not relate to the using Party
1. Prof notes that you should not get to control the use of a
TM unless it indicates something about you. EX:
Georgetown should not get to control the “Georgetown”
mark as it shows up on T-shirts because Georgetown not
trying to claim that it made the shirt.
l. Important Issues with Defenses
i. Claims which may no longer be used against a mark once it has
been registered for five years
1. Claiming the mark is invalid
ii. Defenses which are always available
1. §1115(b): fraud in obtaining registration
2. Genericity
PUBLIC ACCESS
a. Determining Who has the right to use a particular Mark
i. Old Law: Rectanus Doctrine
ii. Current Law: if the second user adapts the mark which he knows
or should know is already in use, he bears the cost of the changing
the mark.
1. §1072: registration imposes constructive notice
2. §1057(c): application for registration also imposes
constructive notice, but it is contingent on following up
with actual use.
3. §1114(1): anyone who adopts a similar mark for similar
goods after the first good has already been registered can be
outsed.
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b. Issues relating to Registrant being a Junior User §1115(b)(5) addresses the
issue of market retention by an unregistered prior user. Since notice can
only operate against those who were using the mark after the notice was
given, a party who succeeds in registering a mark cannot acquire rights
over a merchant who was using the mark before the mark was
registered/before the application was filed.
i. What happens when there is an unregistered prior user
1. The registrant can confine the prior user to the geographic
location where he was using the mark prior to the time it
was registered.
2. Some courts allow the junior user to have a modest zone of
expansion, based on the following factors (from Thrifty
Rent-A-Car System, Inc. v. Thrifty Cars)
a. D must show it adopted mark prior to P’s
registration of the mark
b. D must show that it adopted its mark without
knowledge of P’s prior use (if any)
c. D must show the extent of the trade area in which D
used the mark prior to P’s registration and
d. D must show that it has continuously used the mark
in the pre-registration trade area.
ii. What happens when the senior user is only using mark in one state
so ineligible to register? (§1052(d))
1. The statute says that the senior user gets to continue using
the mark, but the commissioner has the power to issue a
concurrent registration, so that the junior user gets a
registration, with a disclaimer that junior’s registration does
not apply in the area in which the senior user is using his
mark. EX: Hellmann’s Mayonnaise.
c. Timing: once we have determined who has the right to use the mark, how
do we determine when that party has the right to oust the other party?
i. Old Rule (prior to Lanham Act): whomever got to the area first got
to control the area.
ii. Dawn Donut Rule: Once the registered user moves to a particular
area, he gets to keep the market and oust the other users. BUT the
registered user cannot oust other users until the registered user gets
to that market. (Dawn Donut Company, Inc. v. Hart’s Food Stores,
Inc.)
1. NOTE: this rule is now only considered to apply for very
local production, for things which need to be use fresh, like
food.
2. Prof says that maybe instead of this rule we should be
giving the registered user credit for already being there
“constructively.” See page 46 of Big Outline for more on
this.
iii. Alternatives to Dawn Donut
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1. Sterling Brewing, Inc. v. Cold Spring Brewing Corp.: court
allowed TM owner to enjoin junior users as soon as their
marks were registered.
2. Gastown, Inc. of Delaware v. Gastown: confines Dawn
Donut to cases involving products, like donuts, which are
consumed close to their source.
d. Defenses which result in the TM being returned to the public domain:
i. Laches: The trademark holder knew I was out there using his mark
and he did not do anything, so this gave me a reliance interest. The
Trademark holder sat there and didn’t do anything, and now I have
invested a lot in it. So as a matter of equity, the TM holder now has
unclean hands.
VII. OTHER GENERAL ISSUES WITH TRADEMARK INFRINGEMENT
a. General Rule: First Sale Doctrine → someone who purchases
trademarked goods and wants to resell them can UNLESS, for some
reason, the consumer would be confused. Under this rule, sales of
trademarked items on Ebay etc… should all be ok. However, if the court
finds consumer confusion, then the First Sale Doctrine does not apply.
i. Leads to issue of what constitutes “consumer confusion” such that
it would not be OK for someone to purchase a TM item and then
resell it.
ii. Davidoff: the court got around the First Sale Doctrine by finding
sufficient possibility of consumer confusion based on the fact that
something had been scratched off the bottom of the bottles.
b. §1124: what happens when goods cross borders from one country to
another?
i. The main issue is whether the goods are the same or different?
(Lever Bros Co. v. United States)
ii. This of course leads to the question of how different do goods need
to be before they can be excluded at the border under §1124?
1. Mont Blanc Pens: there is a tiny mark under the cap of the
pen. This was scratched off by the reseller, and then these
pens were excluded at the border.
2. Tictacs: one calorie in US, two calories in UK →
considered sufficiently different to be excludable.
3. Cabbage Patch Kids: US excluded ones with Hungarian
rather than US birth certificates.
VIII. REMEDIES FOR TRADEMARK INFRINGEMENT
a. §1114: Damages. While it is possible to get monetary damages in a
trademark infringement case, in practice it is actually very hard to get
them.
i. Basch Case: No monetary damages unless there is actual
confusion and bad intent. In this case the court considered “bad
intent” to mean 1) intent to copy the trademarked item and 2)
intent to pass of the copying item as the underlying trademarked
item
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ii. When damages are awarded, how are they measured?
1. Damages could be the cost of re-educating consumers
2. Damages could be the cost of lost consumers, which is
usually measured via Defendant’s profits. NOTE – cannot
double count damages
b. §1116: Injunctive Relief. This is fairly easy to get. In contrast to most
other types of cases, this is the favored form of relief.
i. Requirements (what needs to be shown)
1. Likelihood of success
2. Irreparable harm
ii. Normally these cases end up being not in jury trials. [This relates
to the idea that injunctions were awarded by courts of law not
courts of equity].
c. §1117: Recovery for violation of rights; profits, damages and costs;
attorney fees; treble damages; election
i. The court has a great deal of discretion over the monetary outcome
of the case.
ii. BUT not always clear what happens in cases where a statute
provides for damages to be determined by the court.
d. §1055: Remedies in a distributorship context
i. This section deals with issues of when does the franchisee’s use of
the mark infringe on the use by the franchisor? §1055 says that the
registered user gets to keep the mark, but only so long as it is not
deceiving to the public.
e. §1118: Destruction of infringing articles
f. §1116(d): counterfeit infringement
i. Requirements to use §1116(d):
1. Spurious Requirement: §1127: definition of “counterfeit
mark - A “counterfeit mark” is a “spurious mark” which is
identical with or substantially indistinguishable from, a
registered mark. Spurious means completely unauthorized.
a. EX: RL authorizes the manufacturer to create 1000
jeans. They run a few extra because some will
inevitably not be perfect, but will still be wearable,
and RL won’t want those. The manufacturer might
sell those for less, which could lead to a depression
in the sales price for the jeans. BUT §1116(d) is
NOT applicable here because these jeans are NOT
spurious. There could still be infringement, but not
counterfeit infringement.
2. Scienter Requirement: D must be acting knowing that the
goods are counterfeited.
g. §1116: Exparte seizure of goods
h. §1117(d): the court can award up to three times the damages, as well as
attorney’s fees.
Criminal Penalties:
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i. §2320: Trafficking in counterfeit goods or services.
1. In 1984, Congress for the first time enacted criminal
penalties for trademark infringement.
2. Rationale: Congress has been persuaded that some spurious
products are actually dangerous. EX: fake propellers.
Remedies Against the State
a. Two main cases:
i. College Savings Bank: sued for TM infringement: TM cases can be
brought in state court. States are immune from being sued in fed
court, which is thus not really a problem for TM but can be for
copyright, which can only be brought in fed court?
ii. Need to look into other case?
b. Issues to consider:
i. This might all be a violation of the TRIPS agreement?
ii. The notion is that you can sue the state for an injunction but not for
money.
PART B: COPYRIGHT LAW
I.
COPYRIGHT FORMALITIES: MECHANISMS OF THE 1909/1976 ACTS
a. Right of Privacy
i. 1909: when someone created/wrote something, as long as they did
not show it to others they had a common law right of privacy.
Once it was published, creator either copyrighted the work, or he
said goodbye to his rights and the item entered the public domain.
ii. 1976: ???
b. Procedure for Copyrighting
i. 1909: Publish the work with name on it, put notice on the work,
put © on it etc….
ii. 1976: NEED TO CHECK but I think it is just as soon as something
is fixed in a tangible means of expression. NEED ALSO TO
CHECK ON WHICH SECTION THIS FALLS UNDER
c. Terms of Protection
i. 1909: You got two terms of 28 years each. You were first given
one term, and then at the end of 28 years you were able to renew
for another 28 years.
ii. 1976: NEED TO CHECK ON THE TERM OF YEARS. Renewal
is automatic, rather than having to go to the copyright office, so it
really has the effect of just one term of protection.
iii. Sunny Bono Term Extension Act: Extended copyrights for another
20 years.
d. Manufacturing:
i. 1909: anything in the English language had to be manufactured in
the US.
ii. 1976: also has a manufacturing requirement.
e. Restoration
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i. NEED TO LOOK INTO THIS
f. Notice Requirement
i. 1909: if no notice given, the item could be used freely as though it
was not copyrighted.
ii. 1976: Current Rule: Although publication with a copyright notice
is not required to obtain copyright protection, it can nonetheless be
beneficial.
1. §401(b): Form of Notice. In order to obtain the benefits of
notice, the copyright holder must use the appropriate
statutory form:
a. The term “Copyright” or “Copr.” Or ©.
b. The copyright owner’s name or a recognized
designation or abbreviation; and
c. The date of publication
g. The simplicity of the 1976 Act
i. Works are automatically copyrighted when created
ii. single term, so no renewal
iii. registration still encouraged, but not required
iv. BUT note, in order to be able to sue for infringement and get
money damages, need to have registered.
v. Other countries do not have such a requirement, which means that
even if you have not registered the copyright you could still sue for
infringement.
OVERVIEW OF THE 1976 ACT
a. §101: Definitions
b. §102: Subject matter of copyright: In general
i. §102(a) tells you the standards for protection and provides a
general list of the types of works which are protected. Important to
note that this is not an exclusive list.
ii. §102(b) provides some things to which Congress specifically did
NOT want the CA to apply, regardless of the form in which it is
described, explained, illustrated, or embodied:
c. §103: Subject matter of copyright. Derivative works can be copyrighted if
they are lawfully prepared according to this section.
d. §106: Exclusive rights in copyrighted works. Subject to §§107 to 121 the
owner of copyright under this title has the exclusive right to do and to
authorize any of the following (See big Outline p. 59)
e. §120: Scope of exclusive rights in the architectural works. This section
includes a specific compulsory license, which says that there is no right to
prevent others from restoring/displaying works.
f. §201: Ownership of Copyright
i. §201(a): individual author or joint authors/creators in common. If
joint authors, each would have the right to exploit the work, to
make all of the decisions, with the duty to account to the other.
ii. §201(b): Works made for hire. The one who instigated the work is
author under statute.
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g. §202: Ownership of copyright as distinct from ownership of material
object
h. §203: Termination of transfers and licenses granted by the author
III.
THE REQUIREMENT OF ORIGINALITY AND AUTHORSHIP
a. Merger Doctrine: where there is only one way to say something, that is not
copyrightable. (Kregos v. Associated Press)
b. The main issue presented under §102(a) is whether something contains
enough creativity/originality to merit copyright protection?
i. Feist Publications, Inc. v. Rural Telephone Service Co: originality
is a constitutionally mandated prerequisite for copyright protection.
While only a modicum of originality needed, modicum still
means something. This was the case where the creativity standard
was really raised.
ii. Hearn v. Meyer: P’s underlying work was a “mere slavish copy” of
someone else’s illustrations and thus did not merit copyright
protection.
1. NOTE: this was a case where P’s underlying work was a
derivative work. There is a higher standard of originality
for derivative works. In addition, in a case like this, P has
the burden of showing that D made his copy not from the
original work but from P’s work, the “original copy.”
c. Cases where things with not that much “creativity” were protected:
i. Alva Studios: P was engaged in practice of copying Rodin
sculptures (which were indisputably in the public domain). D was
then copying P’s replicas. The court held that P’s work satisfied
the originality requirement because it “embodies and resulted from
its skill and originality in reproducing an accurate scale
reproduction of the original…great skill and originality are called
for when one seeks to produce a scale reduction of a great work
with exactitude.”
ii. Note, however, that according to Justice Holmes in Bleisten v.
Donaldson Lithographing, Co., the work does not need to be
completely creative, as you want to encourage “even a modest
degree of personal expression.” Another case where there was a
low level threshold needed to merit copyright was the Mezzotint
case, where the court said that when you go from oil paintings to
Mezzotint you use artistic judgments, and this is sufficient to
create a really original work, and is thus copyrightable.
1. Holmes argument centers around the idea that if we allow
copyrights fairly easily then this will force people to create
more things rather than copying which is for the benefit of
the public.
IV.
SUBJECT MATTER: USEFUL ARTICLES AND CHARACTERS – IS IT WITHIN THE
REALM OF COPYRIGHT PROTECTION?
a. §102(b): This section delineates what does NOT receive copyright
protection.
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i. Ideas. Copyright does NOT extend to ideas, processes etc… you
might get a copyright for the expression of an idea, but not the idea
itself. Baker v. Selden.
ii. Functional Subject Matter. while fanciful costume designs may be
registered if they contain separable pictorial or sculptural
authorship, garment/clothing designs (excluding separately
identifiable pictorial representations of designs imposed upon the
garment) will not be registered even if they contain ornamental
features, or are intended to be used as historical or period dress.
Masks are not useful articles, so they can be registered/copyrighted
if original.
b. Tests for Determining if something is an idea or an expression
i. The Temporal Displacement Test: can an ordinary observer
perceive the aesthetic aspect of the work as separate from the
utilitarian concept? If so → the work CAN be copyrighted.
1. Kisselstein-Cord v. Accessories by Pearl, Inc.: belt-buckle
case
2. Carol Barnhart Inc. v. Economy Cover Corp.: mannequin
case.
ii. Degree of Freedom Test: To what extent do utilitarian aspects of
the work dictate the design of the work? The more freedom, the
more choices, the more the creator presents artistry rather than
utilitarian needs.
iii. Physical Separation Test: does the artistic or creative thing have a
separate purpose other than its utilitarian purpose? If you take
the utilitarian part away would you have a copyrightable item?
1. Mazer v. Stein: ballerina sculpture which became a lamp,
but it was still coyrightable. Merely adding a lightbulb to
an already copyrightable item did not make it not
copyrightable.
2. Problematic result of this test: tzchatchki art, like the
ballerina lamp, get protection, but nice things like a modern
streetlamp do not get protection.
iv. Actual Use Test: This was a test the Second Circuit thought of in
Brandir. It looks at what the artist actually did, not just at the
finished product, in determining whether or not a copyright should
be awarded.
1. Under the Actual Use Test the plaintiff in Brandir is not
entitled to copyright protection. Of the artist had actually
come up with the final product in the first place, then
maybe he would have been entitled to protection. BUT he
first conceived of a design, and then he changed it over
time to make it more utilitiarian. The court looked at this as
an instance where the designer had changed an original
invention in a way to make it more economic and useful.
c. Characters: Are characters Copyrightable?
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i. While the total expression of a story can be copyrightable, specific
plot lines (like boy meets girl, boy and girl fall in love etc… are
NOT copyrightable). Specific plot devices (such as voice overs)
are also not copyrightable.
ii. Warner Bros. Pictures Inc. v. Columbia Broadcasting Systemm
Inc. (the Sam Spade case): 9th circuit held that the literary character
Sam Spade was not copyrightable, opining that a character could
not be granted copyright protection unless it “constituted the
story being told.” This case was limited by subsequent cases in
the Ninth Circuit.
iii. Walt Disney v. Air Pirates: Ninth Circuit held that several Disney
comic characters were protected by copyright. The court reasoned
that the Sam Spade case does not preclude comic book characters
from getting copyright protection because they are distinguishable
from literary characters. This case can be interpreted either as an
attempt to harmonize granting copyright protection to graphic
characters with the “story being told” test, or narrowing the “story
being told” test to characters in literary works.
iv. Anderson v. Stallone: the court in this case did not answer the
question of whether all characters are now copyrightable, or
whether Rocky is a well-embellished character. The court said that
the character of Rocky is enough to warrant copyright protection,
but did not go on further to really say what would not be enough.
However, after this case, characters ARE generally considered
to be copyrightable.
v. See Page 65 of Big Outline for pros/cons of copyrighting
characters
1. Character Analysis Post-Anderson
a. Most read Anderson as overruling the Sam
Spade case
b. Some say that you still need the character to be the
story being told or to have a very colorful character
for it to get protection
c. Could argue that Anderson would have come out
differently if there had been only one rather than
several Rocky Movies, because the character would
have been less well developed.
PROBLEM ANALYSIS: HOW WOULD WE DETERMINE IF SOMETHING COULD BE
COPYRIGHTED?
a. §102(a) Need to ask if it is original or creative? Look at the list under
102(a) to see what category, if any, it would fit under?
b. §102(b) Need to make sure that the item in question is an expression and
not an underlying idea/process etc… Need to look at the different tests
i. Temporal Displacement Test
ii. Degree of Freedom Test
iii. Etc…
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c. §103 if the work is based on another work, need to determine if it is a
properly created derivative work such that it could be protected with a
copyright.
i. §103(a) says that copyright protection does not extend to any work
if the material has been used unlawfully.
ii. When someone gets a copyright in a derivative work, he gets the
copyright in the portion which he did himself.
iii. Issues implicated here:
1. Disclosure Paradox
2. Anderson v. Stallone – if you suffuse your work with
copyrightable work, then you will not have a copyright in
the work at all.
3. Blocking Rights: if the derivative work uses parts of the
underlying work, and the underlying work would function
better if it were able to make use of the derivative work,
§103 might create blocking copyrights, such that neither
party can really use their rights without permission of the
other.
VI.
INCENTIVES: OWNERSHIP, DURATION AND MORAL RIGHTS
a. Authorship
i. The right to authorize copies comes along with the right of
authorship
ii. Right to have termination rights and renegotiate the original grant.
b. Copyright Ownership and Transfer
i. §201(a) governs Joint Authorship
1. Duration of rights: the life of the longest living authors (or
the author in the case of single author works) plus 70 years
2. NOTE: Joint Authorship is different for the purpose of the
duration of rights than is Individual Authorship. Thus even
if something was authored by an individual and then
ownership was transferred to a corporation, the length of
the copyright term would be unaffected.
3. Requirements for Joint Authorship (§101)
a. both authors must have contributed something
which was copyrightable, and
b. both parties must have intended, at the time the
work was created, that their contributions be
merged as inseperable or interdependent parts of a
unitary whole. (Childress v. Taylor)
c. KEY POINT: to have joint authorship need to have
intended to create a single work, and to have
intended to be joint authors.
d. Case: the Rent case
ii. §201(b) governs Works made for Hire
1. Duration of rights: 95 years
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2. Ways in which something can become a work made for
hire
a. Works made in the scope of employment
b. Commissioned Works
i. BUT note – the commissioned works statute
only applies to specific works [NEED TO
FILL IN WHAT TYPES OF WORKS] and
works can qualify under this method ONLY
if the parties expressly agree in writing. This
works well in the movie context, because
screenwriters, performers etc… tend to be
part of unions, but does NOT work so well
out of the movie context.
ii. Cases: Community for Creative NonViolence v. Reid: the court in this case said
that the commissioned works portion of the
statute so they used an agency test under the
“scope of employment” portion and found
that this was not a work made for hire.
3. If dealing with someone who is not specifically enumerated
under the statute, need to ask difficult question of whether
this is a work made for hire or not?
iii. §203 addresses termination of transfers and licenses granted by the
author
1. §203(b)(1): upon termination, the owner of a derivative
work prepared under a grant of the underlying work may
continue to utilize the derivative work after termination, but
the owner of the derivative work cannot prepare new
derivative works of the underlying work once the initial
grant has been terminated.
2. Copyright rights cannot be effectively/perfectly
assigned/sold. Stewart v. Abend
3. Current law on Termination/Renewal
a. Termination: each person in line who has pursued
something should be able to receive a benefit for it,
and they can continue to produce what they have
already made, even after termination
b. Renewal: licensees still screwed after renewal
iv. §104(A): Copyright in restored works
1. Restoration is another place where you have to worry about
someone doing something under a grant and then having
that be pulled out from under them.
2. When we entered into the TRIPS agreement, one of the
things we agreed to do was to restore copyrights. A US
work is defined by who its author is and where it is
published in the first 30 days. These are items which lost
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their copyrights because they could not deal with all of the
formalities.
3. §104(A)(d) deals with the idea of reliance of the parties –
anyone who wants to restore the copyright of a work has to
go to a copyright office and provide notice of intent to
parties who are exploiting the works that they want to
restore the copyright. The exploiter is allowed to have a
year to sell off their works, and then after one year they
could continue to use the work, but would have to pay
reasonable compensation to the copyright holder.
v. Droit de Suite (a right in NY and CA): each time the work is sold,
the artist gets a percentage of the sale. BUT the problem is then
that people do not actually sell the works in CA or NY in order to
get around this. If really want to enforce this as a law, need to
make it a federal law.
c. Moral Rights: when we entered the Berne Convention, we were obligated
to provide for some moral rights, because the Berne Convention requires
that after the transfer of the copyright, authors will still have the rights to
object to mutilations etc…
i. Implementation: what have we done to execute our obligations for
moral rights?
1. There is an argument that the derivative work rights protect
some of this.
2. §106(a) also creates a right of both paternity and integrity,
but it is only for fine art, and is very limited to control the
integrity of the work.
3. Another example of an issue with moral rights is an
individual’s right either to or to not have his name
associated with a particular work. Early on this was
primarily done via §43(a) of the Lanham Act.
4. This all fits within the notion that the public has a right to
what it wants etc…
5. Why is the US so hostile towards moral rights? Because
while protecting author’s integrity is nice, a strict moral
rights regime would undermine free expression.
6. Bottom line, moral rights are not very well protected in the
US. The TRIPS agreement is enforceable. There are
enforcement provisions which allow you to go into the
WTO’s court and allege violations of TRIPS. TRIPS adopts
almost all of the provisions from the Berne convention, but
not the moral rights provisions.
ii. Cases:
1. Gilliam v. ABC: this was the Monty Python case. The court
said that there was no right of integrity because this was
not a recognized right in the US. BUT Monty Python did
prevail in the end on a contract theory, because BBC had
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promised MP they would not cut the work, so when BBC
sublicensed to ABC, ABC did not have the right to cut the
work
2. Dastar v. Twentieth Century Fox: The court ultimately says
that if you want to have a provision about moral rights,
need to think about the stuff considered in §106(a).
§43(a) of the Lanham Act does not do it, and if Congress
wants a rule like that, it needs to enact it.
VII.
COPYRIGHT INFRINGEMENT
a. §501 is the section which addresses Copyright Infringement.
b. Two Main Issues to Address when dealing with Copyright Infringement
i. Was there copying?
ii. If there was copying, was the type of copying that there was in fact
unlawful i.e. does it rise to the level of infringement?
c. Determining if there was Copying
i. Easy cases → someone walks up and copies you. Generally not so
easy as this.
ii. Seed planted → this would be like in Feist, where they
purposefully put in fake phone numbers and there was no way that
D would have had those numbers if they had not copied.
iii. General Rule: need to show copying by more than circumstantial
evidence. If you can show both access and sufficient substantial
similarity, that is generally good. (Arnstein v. Cole Porter)
iv. Different forms of copying (from Nichols v. Universal Pictures
Corp.)
1. Slavish Copying → this is basically recopying the work
and selling it as if it were your own, and is definitely
copying.
2. Copying Blocks in situ → this is also a pretty easy case of
infringement. This involves copying a substantial piece of
the work.
3. Abstraction from the whole → in a computer context this is
called non-literal infringement, and in literary terms this is
paraphrasing. The question is, how far away from the work
do you stand to determine if there was infringement.
Learned Hand develops his test out of this form of copying.
a. EX: Peter Pan Fabrics, Inc. v. Martin Weiner
Corp.: from far away the fabrics really look the
same, but when you get closer you see that there
really are differences.
d. Determining if there was Infringement: even if there were sufficient
similarities so that there is a clear inference of copying, the next question
is whether the copying was of the type which constitutes infringement?
Several different tests have been used for infringement:
i. Substantial Similarity Test [the 2nd Circuit Test]:
1. Elements of the Test:
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ii.
iii.
iv.
v.
a. Unlawful copying
b. Unlawful appropriation
2. Issues to consider
a. Need to look at whether the two works are similar.
Need to make sure that when considering the
similarity, do not consider those things which are in
the public domain.
b. You determine what constitutes unlawful copying
by asking consumers; do the consumers look at the
two things as equally good alternatives? If so, that is
when we start to worry that the copyright holder
might be losing out.
c. Rationale: if people would not buy the “infringer”
thing over the copyright work, then the copyright
work is not in danger of losing out on profitability.
Levels of Abstraction Test: if the similarities are at a high level of
abstraction we will not say that there is infringement, but if the
similarities are at a low level of abstraction, we will say that there
is infringement.
Three Step Substantial Similarity Test (from Altai, to be used in
cases involving computer programs):
1. Abstraction: dissect the allegedly copied program’s
structure and isolate each level of abstraction contained
within.
2. Filtration: examine the structural components at each level
of abstraction to determine whether their particular
inclusion at that level was “idea” or was dictated by
considerations of efficiency, so as to be necessarily
incidental to that idea.
3. Comparison: this is where you look at the “core nuggets” to
determine if there is substantial similarity
a. After these three tests are done, if there is
substantial similarity → infringement
4. Case: Michael Stillman v. Leo Burnett Co.: if you first took
out everything which was in the public domain, you would
be left with very little.
Extrinsic Test [From the 9th Circuit in Apple Computer, Inc. v.
Microsoft Corp.]
1. This test looks objectively at whether there are substantial
similarities between the original and allegedly infringing
work. The standard of similarity is virtual si
2. You do this by consulting experts and dissecting out scenes
a faire, de facto standards, technical constraints and then
compare.
Intrinsic Test: NEED TO LOOK INTO
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1. Looks at things from the viewpoint of the ordinary
observer.
vi. Seventh Circuit Test: NEED TO LOOK INTO
1. Finishes off by looking at the work as a whole.
vii. Aesthetic Comparison Test: looks not only at what is the same, but
also at the aspects of the work which are different. This is a very
stringent test, makes it harder to win an infringement claim.
e. Infringement with Computers/Computer Programs → See Big Outline p.
78-79
f. Other Potential Variations on Infringement
i. Subconscious Infringement
1. Bright Tunes Music Corp. v. Harrisongs Music Ltd.: court
held that the unquestionable access which infringer had to
underlying song led to a presumption of copying, and the
virtual identity between the songs compelled a finding of
subconscious copying. This was essentially a SL standard,
as it did not matter whether or not GH knew what he was
doing. In some cases, however, damages may be reduced if
person not aware he was infringing.
ii. Artistic versions of other peoples’ songs
VIII. CONTRIBUTORY INFRINGEMENT
a. Since nothing is codified in the Copyright Act, a few different standards
have been used as to what P has to show about D’s activities to prove
contributory infringement.
b. Breyer’s Test: need to show almost exclusive use to infringe. No
commercially significant non-infringing use. As long as there is some
non-infringing use, that will be enough to escape. They also say that the
court should not be in the business of contributing flexibility. He says that
there are other ways that the copyright holder can protect himself. What
are those ways?
i. Encryption – could encrypt the CD so that people can’t download
it. the problem with this would be
1. Consumer resistance, people won’t like this
2. People could crack the encryption code. So need to
criminalize this in order to protect this, this is the digital
millennium act.
3. Could then start encrypting lots of other things which are
not copyrighted either, so then this could lead to limited
access to certain things.
4. So this could lead to limiting the regime beyond copyright.
ii. Could put music on peer to peer filing sharing networks.
1. EX: Itunes developed in the wake of Napster, so that
instead of having to buy a whole CD you can get just the
songs you want.
2. So a way to deal with this issue is just to develop lawful
methods of file sharing.
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3. We want the law to be written in a way which encourages
people to do things which are beneficial to society. In each
of these circumstances, the people with the old business
plan try to prevent the people with the new business plan
from doing what they want to do.
c. Ginsburg Test: need to show that the overwhelming use was to infringe.
She is a little less protective and deferential to copyright holders’ interests.
d. Aimster/Posner Test: if there are substantial non-infringing uses, then
you ought to be performing a cost-benefit analysis, thinking about the
social value of what the defendant is actually doing etc…Prof says that
similar to the Ginsburg test this is a nice theory, but not clear that it will be
protective enough.
e. Cases: Grokster: the court says that they did not try to develop any kind of
tools to make sure that copyright works could not be file shared, and that
was inducing infringement, so they were liable.
DEFENSES TO INFRINGEMENT: WHAT DOES THE CA INCLUDE TO MAKE SURE
THAT THE PUBLIC GETS ACCESS?
a. Renewal Provision: after 28/56 years, there is still a lot of value left in the
works, and this value goes to the public.
b. §106: this part of the act provides copyright holders with rights, but also
has the effect of limiting rights
i. Grants copyright holder the right to perform the copyrighted work
publicly → this means that anyone has the right to perform the
copyrighted work privately
ii. Grants copyright holder the right to display the copyrighted work
publicly → this means that anyone has the right to display the
copyrighted work privately
c. §109: First Sale Rule.
i. The rule originally held that once a copyrighted work has been
sold, the copyright holder’s interest in making money was
extinguished. The statute has evolved and is more comprehensive
now, because there are now more ways this works, such as people
who buy work and rent it out.
ii. The issues arising from things such as peer to peer file sharing
which pose potential threats to copyright holders’ rights have been
addressed in numerous ways
1. In Japan, for the first year after a copyright is issued, you
are not allowed to rent out sound recordings.
2. The 1976 CA §109(b) says that renting records and renting
computer programs do constitute infringement. But renting
movies and library books do not constitute infringement.
3. First sale doctrine defense exhausts only the copyright
holder’s right of distribution. EX: if someone buys the
books and cutes them up and makes something else with
them, that is making a derivative work, and you cannot
assert a first sale doctrine defense for that.
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4. First sale doctrine defense does not apply to holders’ public
display rights.
d. §108: Compulsory License Provisions. Some of these are royalty-free
licenses. Some of them are compulsory licenses, where you can use them
without permission, but you do have to pay. How much you have to pay is
set by the statute. Copyright holders will tell you that this keeps the prices
low, because the numbers in the statute are not updated frequently. Each
of the compulsory licenses expresses a societal interest in the particular
use.
i. EX: Libraries. Libraries are important places in which copyrighted
works are kept. Libraries are allowed to make works available to
patrons. Libraries have pretty far leeway.
e. §110: Limitations on exclusive rights: Exemption of certain performances
and displays. Mishmash of small exceptions, all intended to insure free
public use in circumstances where the interest of the copyright holder in
remuneration is less than the public interest in having the work available.
i. EX: educational use.
ii. EX: when she played the songs for us in class, was that even
public?
iii. Face to face educational uses considered exceptions.
iv. “Tower Records Exception”: if you go in, you almost always end
up buying something. This is because they are playing music. §110
allows a performance of something for the purpose of selling
the merchandise. This is a collective action problem – everyone
would like to have their music played, and it is in their interest to
have this music played, but if they needed to give their permission,
no one would.
v. “Fried Chicken Problem” – Akin has a fried chicken place, and has
music playing all of the time. Is that a public performance of the
work? This went all the way to the SC. Original version of 110(5)
drew the distinction based on the type of equipment used to play
the music. If it was just “home style equipment” as in Akin, then it
is not infringing under that statute. BUT a problem with this is that
home style equipment has changed.
1. Now, there are two genuine factors in §110(5)
a. look at type of equipment AND
b. look at size of the store
2. There are also some places which are exempt, and music
can be played, and there is no need to pay for it.
f. §§111 & 119 deal with cable transmissions. When cable first came out it
was good news in that it created markets for works, where previously it
was not possible to get broadcast signals. But the broadcast market also
got smaller because now people had more things that they could watch. In
the end congress decided to step in, by creating FCC regulations on what
can be carried. The copyright act then regulates how much is paid for the
cable.
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g. §113: Deals with useful articles that happen to embody copyrighted
works. You are allowed to display pictures of things you are selling.
Visual works attached to buildings – can still destroy the building, but you
have to give artist a chance to remove his artworks from the building.
h. §115: deals w/cover music. Other people are allowed to record a cover
song as long as you do not change fundamental character.
i. §117: treats computer programs specifically. Can also make archival
copies. 117(c) if a maintenance program is put on your computer, you can
activate the program and use it.
X.
FAIR USE DOCTRINE: ANOTHER DEFENSE TO INFRINGEMENT (AND
ANOTHER FORM OF COMPULSORY LICENSE)
a. Overview:
i. Old Rule: the use needed to be productive to be fair use. This was
dispensed with after Sony.
ii. New Rule: a transformative use is the type of use which will be
considered fair use after Cambell v. Acuff-Rose.
b. The Fair Use Factors (Codified in §107)
i. The Purpose and character of the use, including whether such
use is of commercial nature or is for nonprofit educational
purposes
1. Suntrust v. Houghton Mifflin: this was a commercial case,
but the court said that the production/sale of the derivative
work was fair use.
2. Campbell v. Acuff-Rose: this was a parody, and was thus a
commercial use, but court said it was fair. Court said that
the commercial element was only one factor to consider,
must
3. BUT see Harper & Row: the sole purpose of the use by the
Nation was commercial, so it was NOT fair use.
4. Need to look at whether the use is productive: certain types
of productive uses will weigh in favor of it being
considered fair use. EX: transformative works which make
social commentary.
ii. The nature of the copyrighted work.
1. Look at whether it’s published or not, BUT whether or not
published not dispositive to fair use.
2. Family Entertainment and Copyright Act (pp. 17-18 of
Supp) – allows people to “clean up” works (this is
essentially censorship, effectively leads to the creation of a
new work w/o author’s permission) without there being a
need for fair use analysis. But, makes it illegal to prerelease the cleaned-up version (??).
3. Look at factual nature of the work: Historical works get
copyrighted, but when someone uses the facts, then it may
be fair use.
a. Factual nature is NOT dispositive, though:
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i. Harper & Row case, Texaco case (p. 471) factual, but considered not to be fair use
ii. SunTrust case and Sony case – non-factual,
but were fair use.
iii. The amount and substantiality of the portion used in relation
to the work as a whole.
1. Quantitative approach – if the allegedly infringing work is
really long, and allegedly infringing work has just taken a
few words from the copyrighted work, then is that fair use
or not?
2. Qualitative approach (9th Cir.) – if you take something
important, then that is not fair use.
3. Parodies – in SunTrust case, court found TWDG to be fair
use based on the fact that GWTW was a uniquely good
work from which to make that type of parody.
4. 9th Cir. test for parodies: allows you to take enough so that
the public can get the joke, but only that much – thus, fair
use is when you take only what is “necessary to recall or
conjure up the original.”
a. Prof says courts are undecided as to whether to use
qualitative or quantitative analysis.
b. Unclear whether SC has taken a qualitative or
quantitative approach. What is often done is to use
the fourth factor to determine that “too much” has
been taken if it has destroyed the market: if you
take too much, and that means you have
destroyed potential market for the work, then
that is not fair use.
iv. The effect of the use upon the market for or value of the
copyrighted work. It’s not disqualifying that the work was
unpublished.
1. The question here is whether this new work usurps the
market for the underlying work i.e. if it is a substitute
for the underlying work.
2. Differences in reputational interest argument – reputation
might be different when the work is put into a different
medium.
3. Evidentiary problems argument – whether or not an
empirical study should be done to show what the actual
market was.
c. The Digital Millenium Copyright Act and Fair Use (See page 94 of Big
Outline)
i. DMCA 1201(a) – protect things with digital rights management
(DRM) code, and hacking into that code is a civil and criminal
offense. If you hack into encryption to get access to work, that is
illegal.
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ii. DMCA 1201(b) – Also it’s illegal to traffic in devices or services
that enable others to hack in.
iii. NOTE: there is nothing in the DMCA which says that you can
hack for fair use purposes.
iv. Remedies under DMCA
1. DMCA 1203 - civil remedies
2. DMCA 1204 - criminal remedies
d. Interplay b/w DMCA and Fair Use Doctrine:
i. Question of whether DMCA 1201(c) (which says that nothing in
section 1201 shall affect rights, remedies, limitations, or defenses
to copyright infringement, including fair use) bars the application
of the fair use doctrine when defendants are found liable for
violating DMCA:
1. Universal v. Corley: fair use does not apply to an action in
which the defendants were found liable for violating
1201(a)(2) of DMCA by trafficking a computer program
that was designed to circumvent the technological measures
protecting copyrighted works (DVDs).
a. BUT the argument can be made that fair use
defense should still be available on the ground that
the fair use doctrine was designed to apply to all
rights within the “penumbra of copyright, as well as
to other IP rights.”
b. BUT nothing in DMCA that says you can hack into
things for fair use purposes.
REMEDIES TO COPYRIGHT INFRINGEMENT
a. Requirements to be Eligible to bring an Infringement Action/Get Ret
Remedies
i. §411(a): Registration and infringement actions. In order to be able
to bring action for infringement of copyright in any US work, must
have had preregistration or registration of the work.
ii. §412: Registration as a prerequisite to certain remedies for
infringement. Can only get statutory damages or attorneys fees for
infringements which occur after registration.
1. EXCEPTION: if you register within three months of the
first use, you can get statutory damages for infringements
regardless of when the infringement occurred.
b. Injunctions
i. §502: Remedies for Infringement: Injunctions. You can get a
permanent injunction at the end, as well as a preliminary injunction
if you can show a theory that harm will be irreparable.
1. NOTE: injunctive relief will not always be an appropriate
remedy, as there are some cases where the public really has
an interest in having access to the work. EX:A&M
Records, Inc. v. Napster
c. Attorney’s Fees
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d.
e.
f.
g.
36
i. §505: Remedies for infringement: Costs and Attorney’s fees. In
any civil action, the court has discretion to allow recovery of full
costs by or against the opposing party (except for the US or a US
officer). The court may also reward a reasonable attorney’s fee to
the prevailing party as part of the costs.
1. Fogerty v. Fantasy: This court interpreted this clause as
saying that in order to get attorneys fees under §505, the
other side has to have been doing something extraordinarily
terrible.
Monetary Damages
i. §504: Remedies for infringement: Damages and profits. This
section provides for a few different ways for a copyright holder to
recover damages (BUT no double counting).
1. §504(b): Actual Damages and Profits.
a. The copyright holder can recover profits from
infringer. (Universal Studios v. Ahmed)
b. See p. 97 of Big Outline for more on this
2. §504(c): Statutory Damages
a. Feltner Jr. v. Columbia Pictures Television
Destruction of the Infringing Articles
i. §503: Remedies for infringement: Impounding and disposition of
infringing articles
Criminal Penalties
i. §506: Criminal Offenses. Provides for some criminal penalties
when there is scienter and willfulness.
1. §506(a)(1)(B): this is a new penalty for reproducing more
than 1000 copies. This was put in there in response to
Napster.
2. §506(c): Fraudulent Copyright Notice. This does not work
very well because the penalties are very low.
3. P. 338 of Supp: deals with bootleg photos and movies and
counterfeiting etc…
4. NOTE: copyright, and thus copyright infringement
penalties, only apply to works which have been “fixed.”
There was a movie, “Diva” where she did not want to be
videotaped, but someone did this and then sold copies. This
is NOT copyright infringement because there was no
copyright.
5. Mail Fraud
6. Wire Fraud
7. Family Entertainment Act
8. DMCA
Liability of Internet Service Providers
i. §512: Limitations on liability relating to materials online. If an
internet provider actually knows that something on there is
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copyright infringement, they need to take it down, but they are not
on the hook for things which they do not actually know about.
h. Liability with Importation
i. §602: Infringing importation of copies or phonorecords. Infringing
goods can be stopped at the border. NOTE – when you are dealing
w/foreign goods, there are still lots of open questions concerning
what customs agents can actually do, lots of policy issues.
i. Rights against the Government
i. §519. Rights against the government.
1. NOTE: Congress does have the power to waive state
immunity. BUT to do this must show that the state has
engaged in systematic commercially significant
infringement. (Florida Prepaid cases)
STATE RIGHTS: THESE VARY FROM STATE TO STATE. RIGHTS NOT COVERED
UNDER CA BUT AFFORDED BASED ON SOME STATE STATUTES
a. Misappropriation Doctrine
i. Court essentially created this doctrine in INS v. AP, under the
theory that INS had reaped what it had not sewn. This is IP’s
version of unjust enrichment. NOTE: this was before Erie said no
federal common law.
ii. Five Part Test/Legal Standard for Misappropriation
1. P has generated/collected information at some cost or
expense
2. the value of the information is time sensitive
3. D’s use of the information constitutes free-riding on P’s
costly efforts to generate or collect it
4. D’s use of the information is in direct competition with a
product/service offered by P, and
5. ability of other parties to free-ride on the efforts of P would
reduce P’s incentive to produce such a product
iii. Cases
1. Met Opera v. Wagner-Nichols Recorder Corp.: this was a
NY case where the court held that there was
misappropriation.
2. T-shirt cases: some of these are decided on
misappropriation. Court said that it was misappropriation of
Yale’s name and mark for someone to make money off of
Yale’s name/mark when they have not been licensed to do
so.
b. Database Protection
i. Are these rights within the subject matter of copyrights? Could
argue that this is either a §102(a) or §102(b) issue, as the
information needs to be available to the public.
c. Rights for Publicity
i. Legal Standard: in most states this right protects any identifiable
usage for the persona of a famous person. In many states this right
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is descendible to the heirs/assignees of the person to whom the
right was originally attached. These rights have also been used to
protect identifiable trademarks/characters.
ii. Another related issue is the rise of digitization, which is something
which celebrities fear.
iii. Cases (See p. 105 of Big Outline for more)
1. Three Stooges Case
2. Carson v. Here’s Johnny Portable Toilets, Inc.: court said
celebrity’s legal right of publicity invade when his identity
is intentionally appropriated for commercial purposes.
3. Human Cannonball Case: this case expanded rights of
publicity claims. Court said as long as you can report the
facts, do not need to be able to show the video.
4. Midler v. Ford Motor Co.
5. White v. Samsung Electronics America, Inc.
XIII. PREEMPTION OF STATE RIGHTS
a. Forms of Preemption
i. Conflict Preemption: the appropriate inquiry is whether
compliance with both the federal and state law is physically
impossible, or if the state law posses an obstacle to fulfilling the
goals of Congress?
ii. Statutory Preemption
1. §301 governs preemption with respect to the laws of the
Copyright Act.
2. Under §301, a state law is preempted if the following
criteria are satisfied. If any of these three factors not met
→ no preemption
a. The matter in question is fixed in a tangible medium
of expression
b. The state is trying to protect subject matter which is
copyrightable (§102(a)) OR the state is trying to
protect something which Congress has expressed an
intent not to make copyrightable because they want
to keep it in the public domain. (§102(b)).
c. The right provided by the state is equivalent to
exclusive rights within the scope of §106
i. Objective Test: are the objectives of the
state based protection the same as the
objectives of Congress? This test tends to
lean towards YES
ii. Extra Elements Test: in order to prove the
case you need to prove something different
than what copyright requires. If this is the
case, the claim is NOT preempted.
3. Issues with Preemption
a. Not always clear if something is “Fixed”
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PART C: PATENT LAW
I.
II.
PATENT OVERVIEW
a. Patent §101 does not have a provision like §102(b) of the copyright Act
which puts ideas/facts exclusively into the public domain.
b. There are several sorts of patents, utility, design and plant. We are really
only discussing utility patents.
c. The big question with Utility is where along the pipeline do we want the
patenting to occur? Similar to the issue with copyright of
originality/authorship, where do we want to draw the line?
d. Effect of being a prior user: if you are using a method at the time the
patent issues i.e. you are a prior user, you can continue to use the method
and will not be considered an infringer. For a while there was a website up
which encouraged people to send in evidence that they were using
particular patents. BUT IF YOU ARE A PRIOR USER COULDN’T YOU
ANTICIPATE/BLOCK SOMEONE ELSE FROM GETTING A
PATENT???
UTILITY PATENT OVERVIEW
a. Nature of a Utility Patent: a utility patent gives its owner exclusive rights
in an invention. It can be viewed as an agreement between the inventor
and the public (as represented by the federal government) that in return for
making and disclosing the invention to the public, the public grants the
inventor the right to prevent others from making, using, selling or offering
to sell the invention in the United States or from importing it into the US
for a limited period of time.
b. Term of a Utility Patent:
i. For patents granted on applications filed after June 8, 1995, the
term commences on the date the patent is issued, but term is
measured from application date, and lasts 20 years from the date
the application was filed.
ii. For patents which were in existence prior to June 8, 1995 or
subsequently granted on applications filed prior to that date, the
patent will endure for the longer of 17 years from issuance or 20
years from application date, whichever is longer.
c. Requirements: For something to be patentable, must be novel, nonobvious and useful
d. Defenses: if patentee seeks to enforce a patent against another in a patent
infringement action, defendant can raise patent invalidity as a defense.
The validity of a patent may also be challenged in a declaratory judgment
action. While the PTO’s issuance of a patent provides a presumption of
patent validity, if the defendant or declaratory judgment plaintiff can bear
the burden of proving by clear and convincing evidence that the invention
did not satisfy the novelty, non-obviousness or usefulness standards, or
was not sufficiently disclosed to the public, the court will declare the
patent invalid and unenforceable.
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e. Summary of the Patent Application Process
i. The Steps
1. §112: applicants for a patent must file a written
specification, which describes the invention and sets for
patent claims.
2. An oath or declaration stating that the applicant believes
herself to be the original and first inventor of the subject
matter
3. Drawings where required
4. Filing fee
5. The application is assigned to an examiner with expertise in
the area who searches US and foreign published documents
to determine if this claimed invention is novel and nonobvious as required under Patent Act §§102 and 103.
6. The examiner then reviews the application for other
requirements, and notifies the applicant in writing of his
initial decision.
7. If part or all of the claims are rejected, applicant can file a
request for reconsideration, explaining why the examiner’s
decision is wrong, or amend the claims and explain why the
amended claims cure any deficiencies.
8. The examiner will then issue a second office action
granting or denying a patent.
9. If patent granted, PTO makes the patent prosecution file
available to thepublic, and the patentee must pay an
issuance fee and periodic maintenance fees to retain the
patent in force.
ii. IMPORTANT POINT: Applicant’s Filing Date → date on which
PTO receives the specifications and any required drawings.
f. Provisional Applications: this is used by an applicant who wants an early
filing date but is not yet ready to make a full filing. To do this inventor
must file a written description of the invention and drawings, but need not
submits claims/oaths. Once the provisional application is filed, the
applicant has up to 12 mos to file a regular application complete with all
of the claims. The application only proceeds to examination once this
subsequent filing is made, but the full application gets to date back to the
earlier, provisional application date.
g. Publication: While patent applications are held in confidence, under PA
§122 the PTO generally publishes non-provisional utility patent
applications 18 months after their earliest filing date.
III.
STATUTORY SUBJECT MATTER OF A UTILITY PATENT
a. Patent Act §101 provides for utility patents for “any new and useful
process, machine, manufacture or composition of matter, or any new and
useful improvement thereof.”
i. Process: “a mode of treatment of certain materials to produce a
given result. It is an act, or series of acts, performed upon the
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subject-matter to be transformed and reduced to a different state or
thing.” (Cochrane v. Deener)
1. The novelty in a process may be found in the steps or in the
particular combination of known steps
2. The novelty with a process may also be found in the form
of a new manner of using a known process/thing
3. Note: it is not always easy to distinguish between
processes/embodiments and principles to determine what
must stay in the public domain and what can be permitted
to get a patent.
a. Examples
i. Principle → nitrogen fixing bacteria → not
patentable
ii. Embodiment/Process→ a particular packet
of nitrogen fixing bacteria → patentable
iii. Bell and Morse Cases: Morse’s broadest
claim was that he invented something which
used electromagnetism to transmit markings
at a distance. The court said this was a
principle and not patentable. In contrast, the
court said that Bell’s which made a claim to
“electrical undulations” was an embodiment
and not a principal and thus could be
patented. The line between the two is
really not clear, Prof said it was mostly
based on linguistic differences.
ii. Machine: courts have defined machine as an instrument that
consists of parts or elements which are organized to cooperate,
when set in motion, to produce a definite predetermined result.
1. The novelty in a machine may lie in its particular
components or its particular arrangement of components.
iii. Manufacture: the production of articles for use from raw or
prepared materials by giving those materials new forms, qualities,
properties or combinations, whether by hand labor or by
machinery; also anything made for use from raw or prepared
materials. (American Fruit Growers, Inc. v. Brogdex Co.)This is a
residual category, encompassing many patentable inventions which
fail to fall into one of the other categories.
iv. Composition of Matter: all compositions of two or more
substances and … all composite articles, whether they be the
results of chemical union or of mechanical mixture, or whether
they be gases, fluids, powders or solids. (Diamond v. Chakrabarty)
b. Naturally Occurring v. Manmade: Naturally occurring articles may not be
patented, even by the person who first discovers them in nature. BUT a
naturally occurring article may become the subject of a patent if the
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applicant changes it in a significant way, giving it characteristics
which it would not develop naturally.
i. Old rule: In Funk Brothers Seed Co. v. Kalo Inoculant Co (1948)
the court had held that you cannot take something which is out in
the public domain (such as in nature) and get a patent on it as if it
is something new.
ii. Current Rule: there ARE some things which start in nature which
ARE patentable. (Diamond v. Chakrabarty)
1. Merck & Co. v. Olin Mathieson Chemical Corp.: court
upheld a patent issued when researches isolated the active
substance which gave cow liver its therapeutic benefits to
anemia patients.
c. Live v. Inanimate Matter: Utility patents are not limited to inanimate
matters. Genetically engineered life forms which have characteristics
which they would not have had in nature can be the subject of utility
patents. (Diamond v. Chakrabarty)
i. NOTE: the patent office has construed Chakrabarty as authorizing
patents for higher life forms as well, such as genetically engineered
mice, sheep and cows.
d. Laws of Nature and Abstract Ideas
i. Laws of Nature and Abstract Ideas may NOT in themselves be the
subject of a patent.
1. Rationale
a. They exist naturally, not created by man
b. Would pose a hardship to others trying to create
things
ii. BUT Specific Applications of Laws of Nature/Abstract Ideas MAY
be the subject of patents.
e. Computer Programs
i. Current Rule: Test of whether a computer program/mathematical
algorithm may be patented (from the Federal Circuit court):
whether the applicant is claiming an algorithm in the abstract
(cannot be patented, would constitute an unpatentable abstract
idea) or whether the claim is for a useful application of an
algorithm which results in “a useful, concrete and tangible
result.” (State Street Bank & Trust Co. v. Signature Financial
Group, Inc.)
ii. Old Rule: In Gotshalk v. Benson the SC denied a patent for a
program converting things from base ten to base two on the
grounds that this was an algorithm, and these could not be
patented.
1. After this case there was an outcry in the computer industry
for protection, which resulted in computer programs being
protected under copyright law. However, as we saw in
Altai, this was very thin copyright protection.
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2. Following Altai, court said that while algorithms are not
themselves patentable, in some cases a particular use of
an algorithm may be patentable.
f. Business Methods
i. Old Rule: For a while it was thought that you could not get a patent
on business methods.
ii. Current Rule: after State Street Bank & Trust Co. v. Signature
Financial Group, Inc. the court of Appeals for the Federal Circuit
held that Business Methods are patentable subject matter.
g. Medical Processes/Treatments
i. TRIPS agreement does require patents on things like medical
technologies, but allows countries to decide, if there is a national
security issue at stake, not to honor such patents.
ii. §287(c) provides that patents on medical procedures are not
enforceable against doctors. A medical practitioner’s
performance of a medical activity that constitutes infringement
cannot be the basis for monetary or injunctive relief against the
medical practitioner or a health related care entity.
iii. EX: pricing issues with medicine. When AZT, the first AIDS
drug, was invented, there was pressure to charge less for this.
When Anthrax looked like a big worry, the government said they
would “condemn” CIPRO if they did not start charging a less
price. This is similar to the “exhaustion” doctrine in copyright.
IV.
THE UTILITY REQUIREMENT
a. PA §101 authorizes patents for “new and useful” processes, machines,
manufactures, compositions of matter, or improvements thereof. This is
where the “utility” requirement comes from.
i. NOTE: PTO rarely challenges utility except in the medical context,
probably because of the interest in keeping these things in the
public domain.
b. What constitutes Utility? Utility will be found when there is a current,
significant, beneficial use for the invention, or, in the case of a process,
the product of the process. Merely demonstrating that the invention may
lead to further invention or that the invention fills space is insufficient.
However, while there must be a present, beneficial use, it is not necessary
to demonstrate that the invention works better than alternative methods of
accomplishing its particular goal or function. Nor is it necessary to
demonstrate that the invention has commercial value.
i. Brenner v. Manson: applicant had invented a process for making a
chemical compound. There was no known use for the compound,
although the compound might prove useful in future scientific
research. SC held that the product lacked utility for purposes of
§101, and did not qualify for a patent.
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c. The utility standards have been applied liberally in the pharmaceutical
setting. If something has been shown to be safe/effective in animal tests
this has been held to be sufficient to establish utility even though the
pharmaceutical invention is claimed as useful for humans.
i. “Usefulness in patent law, and in particular in the pharmaceutical
context, necessarily includes the expectation of further
research/development. The stage at which an invention in this field
becomes useful is well before it is ready to be administered to
humans.” (In re Brana)
d. Detrimental Utility: there was at one time an idea that the patent office
should only patent things which were beneficial, not terrible.
i. Juicy Whip, Inc. v. Orange Bang, Inc.: a machine which dispensed
orange juice – the machine was fooling people because it was
dispensing something like Tang but looked like freshly squeezed
juice. Patent was upheld.
V.
THE NOVELTY REQUIREMENT
a. §102 sets forth the requirement that patented inventions be Novel. Three
subsections comprise the novelty requirement, §§102(a), (e) and (g).
Together they ensure that inventions which have entered the public
domain prior to an applicant’s invention date are not patented, and ensure
that in most cases, the first person to make an invention (as opposed to the
first inventor to file an application) gets the patent.
b. §102(a) – Anticipation: “a patent must be denied if the invention was
known or used by others in this country, or patented or described in a
printed publication in this or a foreign country, before the invention
therof by the applicant for patent.” The primary focus under §102(a) is on
the actions of persons other than the inventor/applicant prior to the
date the inventor/applicant made the invention.
i. For an Invention to be considered “known by others in this
country” the following conditions must be met:
1. The invention must have been fully disclosed and
a. Fully disclosed → reduced to practice, either
actually or constructively
i. Actual → building a model
ii. Constructive → creating/filing an
application for patent. An application for
patent must describe the invention with
sufficient skill in the relevant art to make the
invention w/o undue experimentation.
2. The disclosed invention must have been accessible to the
US public
a. While the parameters for this are not quite clear, it
is possible that something less than publication
might suffice.
3. REMEMBER: the key is if the invention was know/used by
others in the US. Evidence that the invention was
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known/used by others in other parts of the world before the
US applicant invented will not preclude the granting of a
US patent under §102(a).
ii. For an invention to be deemed to be “used by others” in this
country the following conditions must be met:
1. The invention was reduced to actual practice and used in
the manner and context for which it was intended.
2. The use must have been accessible to the public, but it is
not necessary that affirmative steps were made to
familiarize the public with the invention.
iii. For an invention to be deemed to be described in a printed
publication in this or a foreign country, the following requirements
must be met:
1. publication must be printed
2. there must actually be a publication
3. the alleged printed publication must set forth sufficient
information about the invention to enable a person with
ordinary skill in the art to make it without undue
experimentation.
4. NOTE: a printed publication any where in the world may
anticipate an applicant’s invention under §102(a), and thus
render it unpatentable for lack of novelty.
iv. For an invention to be considered to have been previously
patented, the following conditions must be met:
1. the applicant’s invention must be the actual subject matter
of the earlier patent and
2. Timing: for purposes of §102(a) an invention is generally
deemed to be “patented” on the date the patent becomes
effective to grant exclusive rights to its recipient, as long as
the contents of the patent are at least minimally available to
the public.
c. §102(e) – Anticipation by prior filings: under this section, an applicant’s
application for a patent will be denied if
i. at the time the applicant invented the item in question, the same
item was already the subject of a patent application and
ii. the application was ultimately published under PA §122(b) or
granted.
iii. NOTE: the key date here is the filing date of the patent application
which has earlier been filed. As long as this date is prior to the date
on which the second item was invented, the second item will be
deemed anticipated.
d. 102(g): This subsection prohibits B from obtaining a patent if A made the
same invention in the US before B and A did not abandon, suppress, or
conceal it prior to B’s invention date.
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i. Determining who is first to invent: invention requires 1) an
inventive concept and 2) reduction of the inventive concept to
practice.
1. Rebutting the presumption of first to invent: While it is
presumed that the first person to reduce the concept to
practice was the first to invent, this can be rebutted. If the
second person to reduce to practice can show that 1) he was
the first to conceive of the invention and 2) was diligent in
reducing the conception to practice, he will be found to be
the first inventor.
2. The Inventive Concept: Someone will be considered to
have conceived an invention when he perceives a specific
result and a particular means of accomplishing that result,
so that a Person of Ordinary Skill in the Art can build/carry
out the invention.
3. Reduction to Practice: this can be either actually or
constructively
4. Reasonable Diligence in Reduction to Practice: this
requires that the inventor continually apply himself to
reducing the conceived invention to actual/constructive
practice. Gaps in time in which no effort is expended
towards reduction to practice will be excused only if
reasonable.
ii. Abandonment, Suppression, and Concealment: even if B was the
second to invent, he may be favored over A, the first inventor, if A
abandoned, suppressed, or concealed the invention prior to B’s
invention date.
1. Failure to apply for a patent not a per se indication of
abandonment if inventor has worked to bring the invention
to the public through other means of
commercialization/publication.
iii. Earlier Invention Abroad: §102(g) also provides that a second
inventor will be denied a patent if the invention has already been
made abroad, and has not been abandoned, suppressed or
concealed. However, the earlier foreign invention will only
preclude the later US invention from getting a patent if the first
(foreign) inventor is able to establish an earlier invention date in a
patent interference proceeding. PA §104 limits a foreign inventor’s
ability to make such a showing.
THE NONOBVIOUSNESS REQUIREMENT
a. §103 provides that an invention is not patentable if it would have been
obvious to a person having skill in the pertinent art as it existed when the
invention was made.
b. Three main issues to consider (from Graham v. John Deere Co.):
i. The scope and content of the pertinent prior art
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ii.
The differences between the pertinent prior art and the invention
at issue and
iii. the ordinary level of skill in the pertinent art
c. The Scope and Content of the Pertinent Prior Art
i. The issue under §103 is whether the person with ordinary skill in
the art would have thought the applicant’s invention obvious in
light of the prior art (as identified under §102(a), (e), (f) or (g)).
1. If the information was revealed in a patent or printed
publication anywhere in the world, or was known or used
in the United States within the meaning of §102(a) prior to
an applicant’s invention date, then it will qualify as prior
art in evaluating the obviousness of the applicant’s
invention.
2. Under §102(g) an earlier invention that was made in the US
and not abandoned, suppressed, or concealed prior to the
applicant’s invention date will be deemed prior art in
evaluating the applicant’s invention. Earlier inventions
made abroad can qualify if established in an interference
proceeding.
3. Under §102(e) information contained in a pending patent
application will qualify as prior art.
4. Under §102(f) an earlier invention or information that was
revealed to the applicant prior to the applicant’s invention
date will be deemed prior art in evaluating the obviousness
of that applicant’s invention. This will be the case even if
the information was not available to other members of the
public or through any means described in other parts of
§102, and would not be deemed prior art against an
applicant who did not know of it. (Oddzon Products, Inc. v.
Just Toys, Inc.)
ii. Important Consideration: while an invention can only be
anticipated by a single prior art reference which contains all of the
necessary elements, obviousness can be demonstrated via two or
more prior art references combined.
iii.